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Generic Top Level Domain Name (gTLD) Decisions |
Infotex Inc v. Lee Youngho
Claim
Number: FA0304000153538
Complainant is
Infotex Inc, Kokomo, IN, USA (“Complainant”) represented by
Dan L. Hadaway. Respondent is Lee Youngho, Seoul, Korea (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <infotex.com> registered with Namebay.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict
in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 31, 2003; the
Forum received a hard copy of the
Complaint on April 4, 2003.
On
April 2, 2003, Namebay confirmed by e-mail to the Forum that the domain name <infotex.com>
is registered with Namebay and that Respondent is the current registrant of the
name. Namebay has verified that Respondent is bound
by the Namebay registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
April 9, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
April 29, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via
e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts,
and to postmaster@infotex.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
May 7, 2003, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the Forum appointed Sandra
Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its
responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to
employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules,
the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response
from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <infotex.com>
domain name is identical to Complainant’s INFOTEX mark.
2. Respondent does not have any rights or
legitimate interests in the <infotex.com> domain name.
3. Respondent registered and used the <infotex.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
provided information architecture services since July 2002. Complainant was
incorporated in August 2002 as a Chapter
Sub-S Corporation in Indiana but had
been operating as a division of Bucheri McCarty & Metz LLP for many years
prior to that.
Respondent
registered the <infotex.com> domain name on March 22, 2003. The
disputed domain name does not resolve to an active website.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted
in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain
name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has
rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
The ICANN
dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant
has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights
will suffice” to support a domain name
Complaint under the Policy. McCarthy on
Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000). Despite the
fact that Complainant does not hold a registered trademark in the INFOTEX mark,
Complainant
has established its rights in the mark for the purposes of the
Policy. Complainant has been incorporated since August 2000, but had
been
operating as a division of Bucheri McCarty & Metz LLP for many years prior
to that. Complainant’s operation under the INFOTEX
mark provides it with a bona
fide basis for submitting the Complaint pursuant to Policy 4(a)(i). See
Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that
ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate “exclusive
rights,”
but only that Complainant has a bona fide basis for making the
Complaint in the first place); see also British Broadcasting Corp. v.
Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not
distinguish between registered and unregistered trademarks and
service marks in
the context of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service
marks”).
Respondent’s <infotex.com>
domain name is identical to Complainant’s INFOTEX mark because the disputed
domain name appropriates Complainant’s entire mark and
simply adds the generic
top-level domain (gTLD) “.com” to the end of the mark. The addition of a gTLD
to a mark does not significantly
differentiate the domain name from the mark
because the mark remains the dominant element of the domain name and gTLDs are
a requirement
for domain names on the Internet. See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO
Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical
to Complainant’s registered ROBOHELP
trademark, and that the "addition of
.com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without
legal significance since
use of a gTLD is required of domain name registrants").
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not favored this Panel with a Response. Thus, the Panel accepts all reasonable
allegations and inferences in the Complaint
as true. See Do the Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to
come forward to [contest complainant’s allegations] is tantamount to
admitting
the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless
clearly contradicted
by the evidence).
Moreover, due to
Respondent’s failure to respond, the Panel may presume that Respondent lacks
any rights to or legitimate interests
in the disputed domain name under Policy
¶ 4(a)(ii). When Complainant asserts a prima facie case, the burden of
proof shifts to Respondent to establish its rights to or legitimate interests
in the disputed domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which
could demonstrate any
rights or legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interests in the domain name because the Respondent
never submitted a response
or provided the Panel with evidence to suggest otherwise).
Respondent
registered the <infotex.com> domain name on March 22, 2003 and
offered to sell it to Complainant three days later. Respondent is not currently
using the disputed
domain name. Respondent’s offer to sell the domain name
registration immediately after it was registered, along with its failure
to use
the domain name in any other way, is neither a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083
(Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests
where Respondent registered the domain name
with the intention of selling its
rights); see also Cruzeiro
Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding
that rights or legitimate interests do not exist when one holds a domain name
primarily
for the purpose of marketing it to the owner of a corresponding
trademark).
Respondent has
not come forward with any proof and there is no evidence in the record to
establish that Respondent is commonly known
by either INFOTEX or <infotex.com>.
Therefore, Respondent has failed to establish its rights to or legitimate
interests in the disputed domain name with regard to Policy
¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by
the disputed domain name or using
the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights
or legitimate interests in domain names because
it is not commonly known by
Complainant’s marks and Respondent has not used the domain names in connection
with a bona fide offering
of goods and services or for a legitimate
noncommercial or fair use).
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent
registered the <infotex.com> domain name on March 22, 2003 and
offered to sell the domain name registration to Complainant on March 25, 2003.
Respondent has not
used the disputed domain name except to offer it to
Complainant for sale. These circumstances indicate that Respondent registered
the <infotex.com> domain name primarily for the purpose of selling
the domain name registration to Complainant for valuable consideration in
excess
of Respondent’s out-of-pocket costs directly related to the domain name.
See Grundfos A/S v. Lokale,
D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name
in any context other than to offer it for sale to
Complainant amounts to a use
of the domain name in bad faith); see also Pocatello Idaho Auditorium Dist.
v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002)
("[w]hat makes an offer to sell a domain [name] bad faith is some
accompanying evidence
that the domain name was registered because of its value
that is in some way dependent on the trademark of another, and then an offer
to
sell it to the trademark owner or a competitor of the trademark owner").
The Panel finds
that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <infotex.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
May 15, 2003
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